easy leg | Decision 2390949 - Matalan Limited v. Esda & Rogo Vertriebs GmbH

Date Published: Sep 28, 2017

OPPOSITION No B 2 390 949

Matalan Limited, Matalan Head Office, Perimeter Road, Knowsley Industrial Park, Liverpool L33 7SZ, United Kingdom (opponent), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative)

a g a i n s t

Esda & Rogo Vertriebs GmbH, Hofer Str. 32, 09353 Oberlungwitz, Germany (applicant), represented by Humboldt-Patent Hübner Neumann Radwer Wenzel, Kurfürstendamm 59, 10707 Berlin, Germany (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 390 949 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 757 159 ‘easy leg’, in Classes 18, 25 and 35. The opposition is based on European Union trade mark registration No 10 181 881 ‘EASY’, in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, and on the non-registered trade mark ‘EASY’ used in the course of trade in the United Kingdom, in relation to which the opponent invoked Article 8(4) EUTMR.

CEASING OF EXISTENCE OF THE EARLIER RIGHT – EUTM No 10 181 881

The opponent invoked the grounds of Article 8(1)(b) and 8(5) EUTMR on the basis of earlier EUTM No 10 181 881.

According to Article 41(1)(a) EUTMR, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5) ...

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid, or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. No conflict can arise between the mark applied for and an earlier mark that has been declared invalid during the opposition proceedings, given that the mark applied for may be registered only after the end of the opposition proceedings. As a consequence, any protection recognised in the earlier mark is not justified by the need to protect the mark’s essential function and is contrary to the spirit and the logic underlying the provisions governing the assessment of relative grounds for refusal and opposition proceedings (13/09/2006, T-191/04, Metro, EU:T:2006:254, § 3-36).

Therefore, if a decision invalidates, revokes or results in some other way in the extinguishing of an earlier right, the opposition will be deemed unfounded insofar as it is based on that earlier right.

On 27/05/2015, the present opposition proceedings were suspended on the grounds that the applicant for the contested EUTMA had filed an invalidity action against the earlier EUTM.

On 31/05/2016, in its decision No 10 697 C, the Cancellation Division declared EUTM No 10 181 881 invalid in its entirety and, as it was not appealed against, the decision became final two months later.

Therefore, the present opposition is to be considered unfounded as far as it based on earlier EUTM No 10 181 881, which has ceased to exist, and the related claims under Article 8(1)(b) and Article 8(5) EUTMR cannot succeed and will not be further pursued.

The opposition will now be examined solely as far as it is based on Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition is based on the non-registered trade mark ‘EASY’ used in the course of trade in the United Kingdom for bags, luggage, travelling bags and cases, articles of clothing, footwear, headgear. The opponent invoked the tort of passing-off.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, lacks important and significant use in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element to its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 02/04/2014 but enjoyed a priority date of 30/01/2014. Therefore, the opponent was required to prove that the non-registered trade mark on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for bags, luggage, travelling bags and cases, articles of clothing, footwear, headgear, the relevant goods invoked by the opponent.

On 10/12/2014, the opponent filed the following evidence:

• A witness statement in the name of William George Lodder, as a solicitor and the Head of Legal Service of the opponent, dated 09/12/2014. Mr Lodder affirms that the trade mark ‘EASY’ has been in continuous use since 2003 for shirts, tops, jeans, trousers, underwear, socks, footwear, knitwear, jogging bottoms, shirts, swimwear, nightwear, outerwear and accessories (scarves, gloves, hats and belts). Mr Lodder also indicates the turnover figures for ‘EASY’ branded goods in 2007-2013 (2007, GBP 154.2 million; 2008, GBP 151.9 million; 2009, GBP 205.5 million; 2010, GBP 110.4 million; 2011, GBP 130 million; 2012, GBP 128 million; 2013, GBP 162 million). He explains that advertising is carried out by way of mailshorts (approximately 9 or 10 different mailshots per year, sent to between 2.5 million and 3 million customers in the UK who have a reward card; in addition, 100 000 copies of each mailshot are sent to stores for other customers to pick up there). Mr Lodder adds that the opponent’s company, ‘Matalan’, is well known in the UK for producing and selling high street fashion with an emphasis on value, quality and design.

The following exhibits are attached to the witness statement:

• Exhibit WGL1: copies of mailshots sent to customers in the UK from 2006 to 2010. The documents seem to be samples rather than the actual leaflets sent out, as the cut-out marks are visible and the dates seem to be stamped on the documents as part of the file names, for example . The trade marks  or , and other variants, as well as other trade marks (, , ), appear in relation to a wide range of items of clothing, all for men (fleeces, long-sleeved tops, T-shirts, jeans, trousers, shirts, etc.).

• Exhibit WGL2: printouts from the opponent’s website at www.matalan.co.uk, downloaded through the Internet Archive Wayback Machine, dating from 2012-2014. The trade mark ‘EASY’ appears in relation to items of clothing.

• Exhibit WGL3: article from www.thejournal.co.uk dated 06/03/2004, reporting on Matalan’s photo shoot with the singer and TV celebrity Peter Andre (referred to as the ‘King of the reality TV show’). According to the witness statement, Mr Andre comments in the article on ‘how impressed he was with Matalan’s clothes’. The article in fact reads ‘I’m keeping the clothes from the shoots. I loved the vest top and the brands they sell are great. It’s good to see a company who can do clothes for half the price of the high street’; consequently, Mr Andre does not specifically mention the trade mark ‘EASY’. The trade mark is mentioned in the article, though, in the following sentence: ‘Matalan’s customers can afford to treat themselves to the hottest new looks from Matalan’s exclusively owned fashion labels including the likes of Lee Cooper, Falmer, Easy, Taylor & Wright, Wolsey and US Athletic, at prices up to 50% less than the high street’. The last line of the article reads ‘Matalan is opening a brand new store at the beginning of April on the Hemiston Retail Park in Consett’.

While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 43).

Furthermore, the General Court has clarified that account must be taken not only of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR, but also of the economic dimension of the sign’s significance (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

The documents filed, consisting of a witness statement along with copies of mailshots, extracts from the opponent’s website and one article from the online press, do not provide the Opposition Division with specific information about the territorial extent of the use of the trade mark ‘EASY’ or with sufficient information concerning the commercial volume, the duration and the frequency of use.

As far as the witness statement is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

In the present case, the witness statement, which was drawn up by the opponent’s Head of Legal Service, refers to high turnover figures and to between 2.5 million and 3 million customers in the UK. Such high figures, should they be corroborated by other documents, may suggest that the use is not merely local. However, the documents in question do not contain conclusive indications concerning the geographical significance of the use. Furthermore, while Mr Lodder refers to the opponent’s stores, thus implying that there are several stores, he does not indicate where these stores are located and only the town of ‘Consett’ (located in the northwest of County Durham) is mentioned in the evidence (online article).

The evidence not only does not provide sufficient indications concerning the geographical significance of the use, but also fails to support Mr Lodder’s assertions concerning the high turnover figures and the intensive annual advertising campaigns targeting millions of customers. The submissions do not include official or objective documents reflecting actual sales or allowing any inference about the opponent’s commercial activity in relation to goods branded with the ‘EASY’ trade mark. Samples of mailshots have been submitted but there is no way of ascertaining how many customers they have been sent to or even if they have been sent at all. The article concerning one fashion shoot with Peter Andre in 2004 does not suffice to draw any safe conclusion about the significance of the use of the trade mark ‘EASY’ either, especially considering that it is not clearly established that ‘EASY’ branded clothing was used for the shoot. The trade mark ‘EASY’ is referred to, but in the context of too vague a statement for any safe conclusion to be drawn regarding the extent of the use. In addition, the reference concerns not the mark ‘EASY’ specifically but also other trade marks (‘hottest new looks from Matalan’s exclusively owned fashion labels including the likes of Lee Cooper, Falmer, Easy, Taylor & Wright, Wolsey and US Athletic, at prices up to 50% less than the high street’).

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

In addition, the opponent failed to provide the Office with the applicable national law in sufficient detail.

The onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision).

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent refers to the tort of passing-off and quotes an extract from a judgment of the House of Lords (House of Lords Reckitt and Colman Product Limited v Borden [1990] RPC 341, HL) but it does not provide the judgment in question.

The proof of the source, namely the applicable law or indeed relevant case-law, is all the more important in a case of passing off that it is a common law tort. Moreover, treating the national legal situation as an issue of fact which is subject to proof by the party alleging such a right, is also justified by the fact that the Opposition Division is not always in a position to monitor the corresponding changes of legislation or development of the case-law in all the Member States.

In view of the foregoing, the opposition also fails under Article 8(4) EUTMR because the opponent did not provide the necessary information to identify the applicable law.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alexandra APOSTOLAKIS

Catherine MEDINA

Adriana VAN ROODEN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.